Ex Parte Sjoberg et alDownload PDFBoard of Patent Appeals and InterferencesJun 14, 201011129497 (B.P.A.I. Jun. 14, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte AKE SJOBERG and ANN-CHARLOTT JOHANSSON ____________ Appeal 2010-000263 Application 11/129,497 Technology Center 1700 ____________ Decided: June 14, 2010 ____________ Before EDWARD C. KIMLIN, PETER F. KRATZ, and MARK NAGUMO Administrative Patent Judges. KIMLIN, Administrative Patent Judge. Appeal 2010-000263 Application 11/129,497 DECISION ON APPEAL This is an appeal from the final rejection of claims 1, 2, 5-7, and 9-25. Claim 1 is illustrative: 1. A process for the manufacturing of a decorative laminate, which laminate comprises an upper decorative and abrasion resistant thermosetting laminate layer and a carrying core, wherein the carrying core is constituted by particle board or fibre board, the upper side of the core is provided with the abrasion resistant thermosetting laminate and with a dampening foil of a thermoplastic elastomer arranged between the upper side of the core and the abrasion resistant thermosetting laminate, which elastomer and which thermosetting laminate are joined with each other and with the core by means of pressing. The Examiner relies upon the following references as evidence of obviousness: Lindgren EP 329154 Aug. 23, 1989 Baba JP 01310058 Dec. 14, 1989 Meyers 2,680,700 Jun. 8, 1954 US S/N 10/722,575 Jinno JP 200169646 Jun. 20, 2000 Ekstrand SE 506960 Mar. 9, 1998 Isaacson 3,551,283 Dec. 29, 1970 Kadokura JP 53059756 May 29, 1978 American Heritage Dictionary definition of elastomer 2000 Appellants’ claimed invention is directed to a process for making a decorative laminate. The laminate comprises an upper decorative and abrasion resistant thermosetting layer and a carrying core of particle board or fiber board. A dampening foil of a thermoplastic elastomer is arranged between the upper decorative layer and the core. 2 Appeal 2010-000263 Application 11/129,497 The appealed claims stand rejected under 35 U.S.C. § 103(a) as follows: (a) claims 1, 2, 5, 7, 10, 12, 15-17, 20, 23 and 25 over Lindgren in view of JP’058, (b) claim 6, 14, 18 and 22 over Lindgren in view of JP’058 and Meyers, (c) claims 9, 19 and 24 over Lindgren in view of JP’058 and Jinno, (d) claims 11 and 21 over Lindgren in view of JP’058 and Ekstrand, and (e) claim 13 over Lindgren in view of JP’058 and Isaacson. In addition, claims 1, 2, 5-7 and 9-23 stand provisionally rejected on the ground of non statutory obviousness-type double patenting over the claims of US S/N 10/722,575. Claims 24 and 25 are also provisionally rejected on the ground of non statutory obviousness-type double patenting over the claims of US S/N 10/722,575 in view of Jinno, and Lindgren, respectively. We have thoroughly reviewed each of Appellants’ arguments for patentability, as well as the declaration evidence relied upon in support thereof. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s § 103 rejections for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. In addition, since Appellants have not presented a substantive argument against the double patenting rejections, we will also sustain these rejections. Appellants do not dispute the Examiner’s factual determination that Lindgren, like Appellants, discloses a process for making a decorative laminate, such as floor material, comprising an upper decorative and 3 Appeal 2010-000263 Application 11/129,497 abrasion resistant thermosetting laminate layer and a core comprising particle board or fiber board, wherein the upper decorative layer and the core are joined by pressing. As recognized by the Examiner, Lindgren does not disclose the use of a dampening foil of a thermoplastic elastomer between the decorative layer and the core. However, as set forth by the Examiner, JP’058 discloses a pressure-resistant composite floor material wherein a cushioning, or dampening, member 4 comprising rubber, foam or ethylene foam material is placed between a base core 1 and a decorative laminate 2 (see fig. 2). Accordingly, we fully concur with the Examiner that it would have been obvious for one of ordinary skill in the art to employ a cushioning or dampening foil of the type disclosed by JP’058 in the flooring laminate of Lindgren. Appellants maintain that JP’058 “departed from the use of an upper surface of wood which is either covered, or impregnated, with a synthetic resin and instead provided an upper decorative surface of a non-abrasion resistant material such as a wood veneer, see the 1st and 2nd paragraph of page 3 of the English language translation” (Rep. Br. 2, 4th para.). However, our review of the cited paragraphs of the English translation find no description of the veneer sheet as non-abrasion resistant. In any event, the conclusion of obviousness is not based upon the veneer sheet of JP’058 being abrasion resistant. Rather, JP’058 evidences the obviousness of incorporating a cushioning or dampening foil in the flooring material laminate of Lindgren. We are also not persuaded by Appellants’ argument that the core of JP’058 is plywood or gluam rather than the claimed particle board or fiber board. The Examiner has cited Lindgren for a core of particle board or fiber 4 Appeal 2010-000263 Application 11/129,497 board and Appellants have presented no argument why it would have been nonobvious to include a dampening or cushioning foil in the flooring laminate of Lindgren. Appellants also contend that there is no teaching in JP’058 that “the “ethylene foam material” of which ethylene is a thermoplastic is also an elastomer” (Rep. Br. 3, 1st para.), although Appellants’ counsel at Oral Hearing acknowledged that polyethylene is thermoplastic. However, Appellants have not refuted the Examiner’s citation of Heritage Dictionary for the definition of “elastomer” and Appellants have not rebutted Examiner’s finding of that “ethylene foam is a material having elastic properties resembling rubber” (Ans. 11, 3rd full sentence). Moreover, inasmuch as elastomeric ethylene foam was a commercially available material at the time of filing the present application, we find that the ethylene foam material disclosed by JP’058, which is disclosed as a cushioning layer as an alternative to rubber, would have suggested an elastomeric material to one of ordinary skill in the art. Appellants rely upon the Eriksson declaration as evidence of nonobviousness. The declaration presents a comparison between flooring materials with and without a dampening foil. The declaration states that laminates of the present invention, comprising a dampening foil, “provide for improved acoustics properties, [ and also] the decreased impact peak force and tibia acceleration contributes to a more comfortable foot strike for the consumer which makes the invention unexpected over prior art laminate floors” (Dec. 14). However, Appellants have not responded to the Examiner’s finding that the declaration evidence is not commensurate in scope with the appealed claims since “elastomer used in the declaration has 5 Appeal 2010-000263 Application 11/129,497 a density and thickness not only above that claimed but above that disclosed in Appellants’ specification (Page 2), and the elastomer used in the declaration has an elasticity not only below that claimed but below that disclosed in Appellants’ specification” (Ans. 13, 3rd para.). In addition, we are in complete agreement with the Examiner that Appellants have hardly established that the declaration results would have been considered truly unexpected by one of ordinary skill in the art. In re Merck & Co., Inc., 800 F.2d 1091, 1099(Fed. Cir. 1986); In re Klosak 455 F.2d 1077, 1080 (CCPA 1972). We agree with the Examiner’s reasoning that “[o]ne of ordinary skill in the art would readily expect that the inclusion of an elastomer material described as a cushion by JP’058 would soften the laminate and thereby reduce acoustic levels and impact force on the laminate” (Ans. 13, last para). Also, as noted by the Examiner, JP’058 specifically teaches that “the impact from walking is reduced by the inserted cushion, and a feel of walking on is further improved” (page 5 of Translation, ll. 6-8). Just as unexpected results are evidence of nonobviousness, expected results, as demonstrated here, are evidence of obviousness. Appellants’ separate arguments for certain dependant claims have been adequately answered by the Examiner. In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting the appealed claims is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). 6 Appeal 2010-000263 Application 11/129,497 AFFIRMED tc NOVAK, DRUCE & QUIGG L.L.P. - PERGO 1300 Eye Street, N.W. 1000 West Tower Washington, DC 20005 7 Copy with citationCopy as parenthetical citation